Russia - Non-recognition of priority for a cascading Russian divisional application
The Presidium of the Russian Intellectual Property Court (IPC) ruled out the possibility for a cascading Russian divisional application to enjoy the priority date of an initial application that has already been registered as a patent.
In October 2023, two IPC Presidium Rulings were issued (IPC-552/2022 and IPC-570/2022, KRKA vs. ASTRAZENECA), which may have an impact on the determination of the priority date for Russian cascading divisional applications.
The Presidium pointed out that only an application which is the very first in a "cascade" of applications can be the "initial" application (in the sense of Article 1381(4) of the Civil Code of the Russian Federation), and that the application from which the last application has been derived represents the “previous” application.
In doing so, the Presidium pointed out that a divisional application may enjoy the same priority as the initial application if, on the actual date of filing of the given divisional application:
- the initial application has not been withdrawn;
- the initial application is not considered withdrawn;
- the initial application has been rejected but the opportunity provided for by the Civil Code of the Russian Federation to appeal said decision of rejection on the initial application has not yet been exhausted;
- the registration of a patent on the invention, utility model or industrial design of the initial application has not yet taken place.
Since the initial application, as the Presidium pointed out, had already undergone state registration of the invention, "this circumstance, by virtue of a direct indication of the Civil Code of the Russian Federation, excludes for the divisional application ... the possibility of establishing the priority date on the basis of the initial application”.
The IPC remitted both cases for reexamination to the Chamber for Patent Disputes (CPD) at Rospatent, which will have to decide on these two opposition cases. According to the current practice, the CPC cannot change the IPC Ruling or interpret it in its own way.
These rulings may be appealed to the Supreme Court. If this does not happen, Rospatent will be obliged to apply said IPC Ruling to all cascades of Russian divisional applications.
On this basis, if there is a cascade of divisional application and the decision to grant (or rejection) for the very first (initial) application of the cascade has already been taken (or the time limit for an appeal against a rejection has already expired), in our opinion, Rospatent could begin to establish the priority data of a cascading divisional on the basis of the actual filing date of the given cascading divisional. In this case, the initial application would represent prior art relative to the divisional application.